Bill Hartzer

Domain Name Uniform Rapid Suspension System URS: National Arbitration Forum First ICANN Provider

If you haven’t heard, there is a new domain name system in place to quickly takedown or suspend domain names that clearly infringe trademark rights. This new domain name suspension system, called the “Uniform Rapid Suspension System“, or simply URS, is very similar to the Uniform Domain Dispute Policy, commonly referred to as the UDRP. The National Arbitration Forum is the first officially ICANN-approved provider of the URS.

Trademark owners have been asking for a quick takedown process for domain names that clearly infringe on a trademark owners’ rights. And now it appears that the URS is going to be put into action.

Technically speaking, the URS has actually been included in the Rights Protection Mechanisms portion of the new gTLD Applicant Guidebook for several years (which you can find hereand has undergone many revisions by the community, specialized working groups, and ICANN staff. The document outlines a dispute resolution process remarkably similar to the Uniform Domain Name Dispute Resolution Policy (UDRP), which the FORUM currently administers.

What exactly is the Uniform Rapid Suspension System URS?

Here’s the “official” explanation of the URS from the WIPO site:

The URS is intended to be a lighter, quicker complement to the existing UDRP. Like the UDRP, it is intended for clear-cut cases of trademark abuse. Under the URS, the only remedy which a panel may grant is the temporary suspension of a domain name for the duration of the registration period (which may be extended by the prevailing complainant for one year, at commercial rates). Initial URS timelines, at least from filing to a determination, are similar to those of the UDRP; also, the URS substantive criteria mirror those of the UDRP (but with a higher burden of proof for complainants, and additional registrant defenses).

It is important to note that, as adopted by ICANN, once a determination is rendered, a losing registrant has several appeal possibilities (from 30 days up to one year); trademark owners may consider this in deciding whether to use the URS or the UDRP, which provides a transfer, and thus does not carry a monitoring burden with it. (Either party may file a de novo appeal (for a fee) within 14 days.) There are also penalties for filing “abusive complaints” which may result in a ban on future URS filings.

The URS has, of course, had its share of controversy. According to the Domains, the URS is much worse than the UDRP.

And, there have been some points of difference between the ICANN Board and the Governmental Advisory Committee on New gTLD Rights Protection Mechanisms, one being the URS:

2. Uniform Rapid Suspension (URS):

GAC scorecard advice 6.2.4
Where the complaint is based upon a valid registration, the requirement that the jurisdiction of registration incorporate substantive examination (paras 1.2f (i) and 8.1a) should be removed.

Board response (1B)
There is no requirement that any registration of a trademark must include substantive evaluation. Each trademark registration must be supported by evidence of use in order to be the basis of a URS complaint. Use of the trademark may be demonstrated by providing a declaration from the trademark holder along with one specimen of current use. Further discussion should take place relating to proof of use.

Further GAC advice
The GAC welcomes the removal of any requirement for substantive evaluation. However, the Board must take into account that demonstration of use is not always a6 requirement of trademark registrations, For example, it is not a requirement of European Union trademark registration for the first five years (after which a registration may be revoked fornon-use).The GAC accordingly submits the following advice to the Board:

The URS should not require evidence of use of the trademark.

This appears to all have been resolved now, and the National Arbitration Forum is set now to start taking on URS requests when the new gTLDs go live. What’s important to note here is that URS will only apply to trademark disputes in new gTLDs.

I spoke with Kristine Fordahl Dorrain, Director of Internet and IP Services and Legal Counsel for the National Arbitration Forum, and here is what she had to say:

The URS will only apply to trademark disputes in new gTLDs. As a result, the system won’t be “open” until after the first new gTLDs are delegated and open for registration. We are anticipating providing a demo of the system to the ICANN community at the Durban meeting in July.

So, at this point, if you need a quick takedown of a domain name and are a trademark owner, you still have to go through the UDRP process.

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